Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 30 March 2012

Those sound marks (or should it be sound-marks?). Earlier today the IPKat was delighted to host Lorraine Fleck's guest post about trade marks (make that trade-marks) for sounds in Canada, which mentions the requirement to "contain a drawing that graphically represents the sound". This prompted one correspondent to write in and ask: "how should the appearance of one sound be compared to that of another that is previously registered?" Merpel says the answer is obvious. The Hearing Officer must put his ear to each of the drawings and listen carefully to the sound it makes ...

By the time the Opposition had
been heard, there wasn't much
left of the Court ...

Around the blogs. IP Finance hosts another powerful post from WiseHarbor's Keith Mallinson, this time taking a look at the effect of patent trolls in the telecom sector: he argues that patience, existing licensing practices and letting the market work is the best policy for dealing both with non-practising entities and with reluctant licensees. On the MARQUES Class 46 blog, Edith Van den Eede has posted a most useful chart which enables you to compare the new and unfamiliar Italian trade mark opposition with the far better-known Community trade mark one. Geoge Clooney and the Rule Against Perpetuities are not often found in immediate proximity of one another in any intellectual property context, then, IP Draughts is no ordinary weblog: take a look here for a somewhat unusual analysis.

Wake-up call for breakfast seminar. If you registered some time ago for William Patry's sell-out seminar, "How to Fix Copyright" this coming Tuesday, you don't need to email the IPKat and ask him to remind you where and when it is -- he is kindly telling you now that it's at the London office of law firm Bird & Bird LLP. Doors open 8am for insomniacs and people whose trains are running unaccountably early, but the breakfast proper starts at 8.30am. If you don't believe the IPKat, you can check the details on the 1709 Blog website (since this is a 1709 Blog event) here.

They never called it The Aardvark. The Intellectual Property Law Journal (IPLJ) is a newly established twice a year peer-reviewed journal of the Faculty of Law, University of Cape Town. Published by Juta, it will provide a platform for debate on local and international IP issues with relevance to South Africa. The Advisory Board consists of numerous stellar IP dignitaries, together with one I. P. Kat. Anyway, the IPLJ is calling for submissions to its inaugural issue which will be published in November 2012. Areticles (not to exceed 12 000 words), case notes and book reviews (up to 5,000 words) and opinion and practice pieces (up to 3,000 words) are welcome. All submissions should be sent to the IPLJ’s managing editors Lee-Ann Tong and Dr Caroline Ncube by 1 July 2012 via email to editorIPLJ@uct.ac.za.

Now, this Kat didn't think it was a very good idea to call this journal the Intellectual Property Law Journal. He doesn't mind the fact that it's descriptive, but does think that it's going to cause more confusion in a world in which the following titles already exist: World Intellectual Property Review, Journal of World Intellectual Property, Intellectual Property Magazine, Intellectual Property Quarterly,Journal of Intellectual Property Law & Practice, Journal of Business & Intellectual Property Law, to name but a few. This Kat urged the new journal's powers-that-be to call it The Aardvark. The name is highly distinctive, hugely memorable, connected with South Africa, amenable to an allusive logo and therefore quite App-friendly -- as well as coming right at the top of the alphabet in any list of IP periodicals. The sidebar of this weblog carries a poll, which enables you to advise Juta as to whether it should stick with TheIntellectual Property Law Journal or opt for Aardvark. Don't waste this opportunity: vote now!

Last Sunday this Kat posted a piece, "Whatever the Report Says: Can Trade Secrets Really Be That Important?", here, which has already generated quite a bit of reaction (the 11 comments posted at its foot testify to that). This post has also generated a comment from James Pooley, World Intellectual Property Organization (WIPO) Deputy Director General for Innovation and Technology. The IPKat thinks that it is worthwhile these thoughts and thanks James for his willingness to let him host them here.

For the record, James emphasizes that the comments below are his personal opinion only and do not in any way represent any official position of WIPO.

"I think the major reason for your surprise about the preeminence of secrecy over patenting as a form of IP protection is that, as you observe, most IP lawyers do not deal with trade secrets very often. The IP profession tends to focus its attention on what we are most often called to do, and the three obvious categories -- patents, trademarks and copyrights -- are registration systems, which to varying degrees typically require legal talent in order to perfect one's rights. But these same attributes that make secrecy a lesser-known form of IP protection among lawyers are exactly what make it so popular with business. You don't have to file any paperwork with the government or negotiate for the boundaries of your right -- you just have it by virtue of possessing undisclosed information that you don't want the competition to know. Secrecy is ubiquitous, and it is cheap. Most of the time, you don't need to have lawyers involved unless you get into litigation. So why should we wonder at its popularity?

Indeed, the NSF survey is not the first to come to this conclusion. The most frequently cited reference on the same point is a 2000 study by Prof. Wesley Cohen of Duke University, et al., "Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not)", Nat’l Bureau of Econ. Research, Working Paper No. 7552 (2000). I am not familiar with the OECD paper you refer to.

At least in the U.S., trade secret law receives a fair amount of attention from practitioners (at least some of us), and increasingly from academics. My own treatise on Trade Secrets (from Law Journal Press, here) has been published and updated since 1997. Earlier treatises similarly dedicated to the law and practice of trade secrets were authored by Roger Milgrim and by Mel Jager. For an excellent review of recent scholarship in the field of trade secret law, see The Law and Theory of Trade Secrecy: A Handbook of Contemporary Research (Rochelle C. Dreyfuss & Katherine J. Strandburg eds., 2011, here). And there are in fact courses specifically and exclusively about trade secrets being given at U.S. law schools. I taught such a course as early as 1985 at Santa Clara, and did so continuously at Berkeley from 1999 to 2009.

The IPKat and Merpel have their own secret recipe
for titanium dioxide. Here you see them watching
to make sure the latest batch doesn't boil over ...

There are good reasons for businesses to choose secrecy over patenting; the most common category is process technology, which is difficult (or impossible) to reverse engineer from a finished product, and which would be difficult (or impossible) to detect as patent infringement. An example is DuPont's method of producing titanium dioxide, developed in the 1930s and maintained since then as an extremely valuable trade secret, responsible for millions in profits. Source code is almost always protected by secrecy. And beyond technical information, an enormous amount of business data, such as strategies, financial information, customer lists and unreleased product plans, are covered exclusively by trade secret law. Consider Apple, which generates a lot of buzz while pundits guess about the features of the next iPad -- all of that speculation creates more market demand, and the legal basis for generating it is: trade secret law.

Frankly, in the global information economy, protection of secrets is more important than ever. This is mainly because of the increasing use of collaboration in the development of technology. The term "open innovation" has become popular to describe how companies turn to resources outside of their own laboratories to create new products. In the increasingly connected world, this leads to "networked innovation", in which problems are solved by teams opportunistically assembled among qualified participants wherever they are located around the globe. But in order for those networks to function, they need to share information on a trusted basis, and that in turn depends on robust (or at least adequate) trade secret laws. in the relevant jurisdictions".

Thanks, James, for this incisive and insightful comment.

Katnote: IPKat team member Jeremy is very excited to see James's reference to The Law and Theory of Trade Secrecy: A Handbook of Contemporary Research, since he is the editor of the series of Edward Elgar Research Handbooks of Intellectual Property, of which Rochelle and Katherine's book forms a valued part. He adds, watch out for Gurry on Breach of Confidence: the Protection of Confidential Information (second Edition, not quite published), which is now written by a talented trio of Australians, Tanya Aplin, Lionel Bently and Simon Malynicz. The book's web page is here and the Gurry in question is this one.

Merpel moans, since James was speaking in his personal capacity, I thought it would be a good idea to contact WIPO and ask what its official line on trade secrets was, but they wouldn't tell me: they said it was a secret ...

The IPKat is always delighted to show the extent of his tolerance towards the curious customs and practices of those good folk who happen to belong to other nations, particularly when it doesn't cost him anything to do so. For this reason, whatever he might privately think of the bizarre ritual of hyphenating the words "trade" and "mark", he understands that this is something that Canadians just can't help doing. It's part of Canadian heritage, just like maple syrup, Mounties and those dam beavers. The post below from his Canadian friend and fellow blogger Lorraine Fleck shows tell-tale symptoms of Canadian Hyphen Syndrome which, like all well-mannered Kats, he will endure with grim, self-sacrificing fortitude while he grinds his teeth a good heart, a warm smile and a liberal dollop of benign forbearance.

Lorraine, a barrister, solicitor and trade-mark agent with Hoffer Adler LLP, Toronto, has some exciting news for us all, on the subject of trade marks for sounds. Her guest post runs like this:

"Canadian Trade-mark Practice Roars into a New Age: Sound Marks Now Registrable in Canada

On 28 March 2012 the Canadian Trade-marks Office (TMO) announced that it will be accepting sound mark applications effective immediately. On the same day, the TMO published the first advertisement of a Canadian sound mark application in theCanadian Trade-marks Journal at page 2 – application No. 714314 for MGM’s roaring lion sound mark, filed on 6 October 1992 claiming motion picture related wares and services. That application was finally refused by the TMO on 10 October 2010 and an appeal to the Federal Court of Canada was lodged on 12 October 2010. It appears that CIPO’s new policy is the result of a 1 March 2012 Federal Court order in that appeal, directing the advertisement of that application. The TMO consented to that order. This is not surprising, given that the TMO announced proposed amendments to the Trade-marks Regulations on 23 February 2012 allowing the registration of sound marks in Canada, as well as motion and holographic marks.

The TMO’s Practice Notice on sound marks states that a Canadian sound mark application should:

1. state that the application is for the registration of a sound mark;
2. contain a drawing that graphically represents the sound;
3. contain a description of the sound; and
4. contain an electronic recording of the sound in MP3 or WAVE format recorded on a CD or DVD, with a maximum file size of 5MB. The TMO will not accept recordings on other media types, or recordings accessible via a hyperlink or streaming location.

The TMO will not accept sound mark application through its online filing system. As sound mark applications can only be submitted in paper form, the government application fee is marginally higher ($300 CDN filing fee for a paper application, v $250 filing fee for an online application).

Predictably, sound marks will be examined using the same criteria as other trade-marks. This means that the TMO will object to sound marks it considers functional and/or or clearly descriptive or deceptively misdescriptive. However, such marks may still be registrable on the basis of acquired distinctiveness in Canada or registration and acquired distinctiveness abroad.

Will applicants will take advantage of Canada’s first foray into non-traditional marks? The answer is anyone's guess [Merpel says, "anyone's guess" rhymes with ... "yes"]".

Leo the MGM Lion here
The Sound of Music here
The Sound of Silence here

Thursday, 29 March 2012

The Opinion of Advocate General Niilo Jääskinen in Case C-509/10Josef and Thomas Geistbeck v Saatgut‑Treuhandverwaltungs GmbH was published this morning. This Opinion follows the referral to the Court of Justice of the European Union of some questions from the German Bundesgerichtshof for preliminary ruling on the interpretation of Articles 14(3) and 94(1) and (2) of Council Regulation 2100/94 on Community plant variety rights (the CPVR Regulation) and Articles 5 and 8 of Commission Regulation 1768/95 (the Community Planting Regulation) implementing rules on the agricultural exemption provided for in Article 14(3) of Regulation 2100/94.

The IPKat doesn't know the background to the reference. The questions referred for the preliminary ruling were however as follows:

"(a) Must the reasonable compensation which a farmer must pay to the holder of a Community plant variety right in accordance with Article 94(1) of the CPVR Regulation because he has used propagating material of a protected variety obtained through planting and has not fulfilled the obligations laid down in Article 14(3) of the CPVR Regulation and Article 8 of the Community Planting Regulation, be calculated on the basis of the average amount of the fee charged for the licensed production of a corresponding quantity of propagating material of protected varieties of the plant species concerned in the same area, or must the (lower) remuneration which would be payable in the event of authorised planting under the fourth indent of Article 14(3) of the CPVR Regulation and Article 5 of the Community Planting Regulation be taken as a basis for the calculation instead?

(b) In the event that only the remuneration for authorised planting must be taken as a basis for the calculation: in the circumstances described above, may the holder, in the event of a single intentional or negligent infringement, calculate the damage for which he must be compensated in accordance with Article 94(2) of the CPVR Regulation as a lump sum based on the fee for the grant of a licence for the production of propagating material?

(c) Is it permitted or even required, when assessing the reasonable compensation due under Article 94(1) of the CPVR Regulation or the further compensation due under Article 94(2) of the CPVR Regulation, for the special monitoring costs of an organisation which protects the rights of numerous holders to be taken into account in such a way that double the compensation usually agreed, or double the remuneration due under the fourth indent of Article 14(3) of the CPVR Regulation, is awarded?".

Frustratingly, the Opinion is available in 15 languages of the European Union, including Maltese, but not in English. According to Google Translate (as tweaked by this Kat), the Advocate General has advised the CJEU as follows:

"The equitable remuneration which, under Article 94(1) of Regulation 2100/94 the farmer is obliged to pay the holder of a right to Community plant variety protection for using propagating material of a protected variety obtained by culturing without fulfilling the obligations laid down in Article 14(3) of Regulation 2100/94 and Article 8 of Regulation 1768/95 (as amended), must be calculated based on the average amount charged for the licensed production of propagating material of protected varieties of the plant species concerned in the same region. Because, first, calculating the amount of equitable remuneration on the basis above puts the holder back in the position before the breach and reparation for the consequences of infringing his rights, and, further, the costs of monitoring and surveillance should be considered as having been included by the licensee in the licence fee, payment of these fees may be charged by the owner to the extent that it is extra-litigation or litigation related to the review of a particular case of infringement for which reimbursement may be required under and subject to the conditions provided for in Article 94(2) of Regulation 2100/94".

The IPKat appreciates that not every reader of this weblog is excited by Community plant variety rights and that they are something of a minority interest. He feels however that it is important to know what is happening in some of the less prominent areas of IP since the livelihood of many business and traders is affected by them. He is also conscious of the possibility of transplanting the reasoning of the CJEU with regard to the payment of reasonable remuneration from an obscure field such as this to more prominent areas of IP such as copyright and to the calculation of damages under the IP Enforcement Directive. Accordingly he invites readers who know a bit about the background to this reference to share their knowledge with the rest of us.

A fact that the IPKat omitted to mention in yesterday’s post on Teva and ors v AstraZeneca was the large number of legal teams involved. There was one defendant and six claimants. Two of the claimants (two Teva entities) were represented by one legal team, while the other four claimants had another legal team. So in total there were three teams, each of a firm of solicitors, a QC (except that all the claimants shared a single QC), and a further barrister.

On the same day was issued a decision of Mr Justice Floyd. This case had two claimants and one defendant, and again three legal teams, each of a firm of solicitors, a QC, and a further barrister. The London contentious legal profession has been heavily occupied with these two cases.

VEGF Trap Eye

Floyd J’s decision was in Regeneron Pharmaceuticals Inc, Bayer Pharma AG v Genentech Inc. The case started as an action for a declaration of invalidity of Genentech’s patent EP1238986, and declaration of non-infringement by a product that Regeneron is planning to market called VEGF Trap Eye. That is why Regeneron and Bayer are the claimants, while the patentee is the defendant.

The decision itself is a moderately whopping 222 paragraphs (56 pages in the formal version; 23 in the html version that the IPKat read, for some reason ending up in microscopic font size), but ends with the pleasingly brief and fully informative paragraph:

The patent is not invalid on any ground alleged. The patent is infringed by VEGF Trap Eye.

So what was it all about? The IPKat will attempt a précis. The judgement is referred to by paragraph number.

The patent had the following main claim [28]:

Use of a hVEGF antagonist in the preparation of a medicament for the treatment of a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation, wherein the hVEGF antagonist is:(a) an anti-VEGF antibody or antibody fragment;(b) an anti-VEGF receptor antibody or antibody fragment; or(c) an isolated hVEGF receptor.

Upon seeing this claim, wherein both the medical indication to be treated and the proposed treatment are defined in broad functional terms (and having sneaked a glance at the final result) the IPKat was intrigued as to how Genentech possibly managed to navigate between the Scylla and Charybdis of inventive step and sufficiency. Somehow they did.

Background

Blood vessels comprise two main cellular components: the endothelium and the mural cells. The endothelium is a continuous, cylindrical layer of cells, called endothelial cells, which interface with blood in the vessel. [4]

Vasculogenesis is the formation of blood vessels from scratch. Vasculogenesis primarily occurs during embryonic development of the circulatory system. Angiogenesis, or neo-vascularisation, on the other hand is the process of new blood vessel growth by endothelial cell proliferation and outgrowth from pre-existing vessels. In a number of normal physiological processes, such as wound healing and during the female reproductive cycle, new blood vessels are required to supply oxygen and nutrients to developing tissues. In these processes new blood vessels are produced by angiogenesis from the existing vasculature. Excessive angiogenesis, on the other hand, is a contributing factor to the pathology of a number of diseases, including cancer. In cancer, tumour cells cause new blood vessels to be produced by angiogenesis in order to supply nutrients and oxygen to the tumour, enabling it to survive and grow. These new blood vessels also enable tumour cells to escape into the bloodstream and spread to other areas of the body in a process known as metastasis. In diseases such as diabetic retinopathy and neovascular age-related macular degeneration, new blood vessels directly disrupt or interfere with the structure or normal function of other tissues. [5]

A large number of angiogenic growth factors had been shown to have activity in one or more assays by the filing date of the patent. These included: FGF, VEGF, PD-ECGF, EGF, TGF-ß, TNF-α, angiogenin and angiotropin. [61]

So, VEGF was not new, but was only one of a number of known angiogenic growth factors.

Patentability [107-151]

The pleaded closest prior art was a 1992 paper by the inventors of the patent and co-workers entitled "The vascular endothelial growth factor proteins: identification of biologically relevant regions by neutralizing monoclonal antibodies" published in Growth Factors, 1992; 7(1): 53-64 ("Kim 1992"). [101] This disclosed an antibody to VEGF (i.e. satisfying the definition of (a) in the claim) which “may have therapeutic potential” (so not specifically indicating any particular medical use).

The inventive concept is the use of one of the specified VEGF antagonists in the treatment of a non-neoplastic disease characterised by undesired excessive neovascularisation. [134]

Floyd J accepted that, at the filing date, it was not known which, if any, of the many angiogenic growth factors represented a suitable target to achieve a therapeutic effect against pathological conditions involving neovascularisation. So it was not known that VEGF was a suitable target. Therefore, he found the claims to be inventive (as well as novel). Accolades in the literature were held to support this finding [146-149].

Sufficiency [152 onwards]

This is a huge section of the judgement. All varieties of insufficiency were considered – classical insufficiency, insufficiency by ambiguity, and “Biogen” insufficiency.

I consider that the patent discloses a principle of general application within the meaning of the authorities insofar as it claims anti-VEGF antagonism as a treatment for all non-neoplastic diseases. [189]

Therefore, he considered that the invention fell within the class that, under Biogen, is entitled to be claimed broadly without thereby being insufficient.

In respect of classical insufficiency and considering specific diseases and disorders, Floyd J found that it was not proved by the claimants that there were medical conditions falling within the scope of the claim definition that were not treatable by the claimed antibodies or receptors. He further held that it was no barrier to sufficiency that developing a suitable treatment might take years, nor that it might involve invention – he accepted that VEGF Trap Eye was inventive.

Floyd J also rejected the submission that there was insufficiency by ambiguity, in that there was difficulty in determining what was a disease or disorder characterised by undesirable excessive neo-vascularisation. He considered that in the end the evidence did not support this. [220]

Accordingly, Floyd J rejected all of the insufficiency attacks.

Infringement [89-94]

The product VEGF Trap Eye is a treatment for age-related macular degeneration of the eye. Its active ingredient is “a recombinant chimeric homodimer, each monomer comprising:

the immunoglobulin-like domain 2 of the VEGF-R1 receptor; and

the immunoglobulin-like domain 3 of the VEGF-R2 receptor; fused to

the constant region (Fc) of human immunoglobulin G1.” [90]

Put more simply, the product is part of a receptor for VEGF.

Floyd J held that this was an infringement under (c) of the claim, even though it is not the complete VEGF receptor.

The judgement is clear and the reasoning well explained. The IPKat expects that there will be an appeal, and looks forward to round 2. He is also left with the nagging feeling that, comprehensive as the judgement is, something has been left out. He thinks it might be a detailed analysis of whether the claimed monopoly is justified by the contribution to the art, which he suspects should be part of the final sanity check of such a considerable judgement.

The General Court gave its decision today in a Community trade mark appeal, Case T-369/10You-Q BV v OHIM. It's not an earth-shattering legal ruling, but it is one that has prompted -- and continues to prompt -- some of the IPKat's most vigilant readers to email him with the question "I wonder whether you have seen today's ruling ...?" Anyway, according to the Curia press release:

"Apple Corps can prevent the registration of a figurative Community trade mark composed of the word ‘BEATLE’ in respect of electric mobility aids

It is likely that, by using that mark, You-Q would take unfair advantage of the repute and the consistent selling power of the marks BEATLES and THE BEATLES held by Apple Corps

The applicant's mark

In January 2004, Handicare Holding BV applied to OHIM, the Community Trade Mark Office, for registration of a figurative sign composed of the word ‘BEATLE’ as a Community trade mark in respect of electric mobility aids for persons with reduced mobility. However, Apple Corps Ltd, an undertaking founded by ‘The Beatles’ group, opposed that application, relying on its various earlier Community and national trade marks, including the word mark ‘BEATLES’ and several figurative marks composed of the word ‘BEATLES’ or ‘THE BEATLES’.

On 31 May 2010 OHIM [Board of Appeal; the original Opposition Division decision was in August 2009 -- still more than five years after the initial application. Merpel wonders what happened in the meantime ...] rejected Handicare’s application, finding that, because of the similarity of the signs, the considerable and long-standing reputation of the earlier marks of Apple Corps and the overlap of the relevant public [Those elderly folk who were still in their teens when they sang "When I'm Sixty-Four" and never imagined what it would be like when they got there ...], it was likely that Handicare would take unfair advantage of the repute and the consistent selling power of the marks of Apple Corps by using the mark applied for. OHIM therefore concluded that there was a serious risk that detriment to the earlier marks, of which Apple Corps is the proprietor, would occur.

The opponent's mark

Handicare – which became You-Q BV after this case had been brought – asked the Court to annul that decision. In its judgment today, the Court has upheld OHIM’s analysis and dismissed the action. First of all, the Court has held that OHIM was entitled to find, on the basis of the evidence submitted, in particular the sales of the Beatles’ records, that the earlier marks THE BEATLES and BEATLES have an enormous reputation for sound records, video records and films and a reputation, albeit lesser, for merchandising products such as toys and games [Curiously, this was always the case. Plastic Beatle Wigs, sold in Woolworths for 6d (= 2.5 pence), were never much in demand]. Next, in the view of the Court, OHIM was right to find that, visually, phonetically and conceptually, the signs at issue are very similar. Moreover, those marks have a distinctive character so that, when faced with them, the public at large, in particular in the non-English speaking countries of the EU, will immediately think of the eponymous group and their products.

Similarly, OHIM was right to observe that there is an overlap between the two sections of the public targeted by the signs at issue, since persons with reduced mobility are also part of the wider general public targeted by the earlier marks. Consequently, OHIM was entitled to infer from those factors that, notwithstanding the difference between the goods in question, there is a link between the signs at issue.

Accordingly, because of the existence of that link, the relevant public, even in the absence of a likelihood of confusion, would be led to transfer the values of the earlier marks to the goods bearing the mark applied for. The image conveyed by the earlier marks is, even after fifty years of existence, still synonymous with youth and a certain counter-culture of the 1960s, an image which is still positive. That positive image could benefit the goods covered by the mark applied for, since the relevant public, on account specifically of the handicap in question, would be particularly attracted by the very positive image of freedom, youth and mobility associated with the marks BEATLES and THE BEATLES [Freedom, youth and mobility? Not the Beatles, surely? Of contemporary bands the Who and the Stones look like better bets ...]. This is especially so as a part of the public targeted by You-Q’s goods belongs to the generation of persons who knew the Beatles’ goods in the 1960s and some of whom may now be concerned by the goods covered by the mark applied for. That image transfer would therefore enable You-Q to introduce its own trade mark on the market without incurring any of the great risk or costs, in particular advertising costs, connected with launching a newly created mark.

The Court therefore concludes that OHIM did not err in finding that it is likely that, by using the mark applied for, You-Q would take unfair advantage of the repute and the consistent selling power of Apple Corps' trade marks".

Back in the USSR (for those too young to spot the cultural allusion) here

For all you motor enthusiasts out there, this has been an interesting week for cars and IP (see KatPost on VW and trade mark issues here, not to mention the post previous to this one). In preparing this post, this Kat (being rather naive where motoring matters are concerned) has learnt all manner of new-fandangled motoring terms such as 'rearward chin' and 'profiled foot' to delight her friends in after-dinner party conversation and to dazzle in future work trivia nights.

The proceedings which attracted her attention related to a claim by Force India Formula One Team Ltd (Force India) against several defendants for misuse of confidential information and copyright infringement relating to the design of a half-size wind tunnel model of a Formula 1 (F1) racing car.

1 Malaysia Racing Team SDN and its English subsidiary 1 Malaysia Racing Team (UK) Limited (the first and second defendants) operated a Formula 1 team under the name of ‘Lotus’. During his career, Mr Michael Gascoyne (the third defendant) had worked as a designer and technical director for both Force India and Lotus. Aerolab SRL (Aerolab, the fourth defendant) and its parent company Fondmetal Technologies SRL (Fondmetal, the fifth defendant) operated a wind tunnel and had worked as external aerodynamic design consultants for a number of F1 teams.

In 2008, Force India entered into a Development Contract with Aerolab. The key terms were:

1. The duration of the Development Contract was until 31 December 2009 (clause 2).2. Aerolab was obliged to deal with Force India in the utmost good faith and to use its best endeavours to ensure that its staff did likewise (clause 3(c)).3. Intellectual property (including copyrights and designs) created or developed by Aerolab pursuant to the Development Contract became the sole property of Force India (clause 3(h)).4. The agreed fee for this work was €246,833 per month in 2008 and €253,400 per month in 2009 (clause 4).5. The Development Contract was governed by and to be construed in accordance with English law and the parties agreed to submit to the exclusive jurisdiction of the English courts (clause 8(e)).6. Aerolab and its employees were under a duty of confidentiality and an obligation of non-disclosure (clause 5).

Aerolab terminated the Development Contract in 2009 and started working for Lotus. Force India claimed that Aerolab’s design of a half-size wind tunnel model of a F1 racing car had been subsequently used in a car that Aerolab had designed for Lotus. In particular, Force India alleged copying of 71 designs. Of these, 57 were designs or precursors of designs for wind tunnel model parts and 14 are assemblies or combinations of individual model part designs. Of the 57 individual model part designs, 36 were for aerodynamic components, the full size equivalents of 25 of which were visible on the Force India F1 car during the 2009 season. The remaining 21 out of 57 were mechanical wind tunnel model parts which have no equivalent in a full size car.

Lotus did not dispute that some its employees had engaged in some copying of computer files containing Force India designs. There were four areas of dispute:

1. How much copying took place?2. To what extent was the copying actionable?3. Which Lotus companies were liable?4. What sum should be awarded to Force India as compensation?

Aerolab made a cross-claim against Force India in relation to an unpaid debt. In particular, it contended that it had terminated the Development Contract after Force India's repudiatory breach by persistent non-payment of sums due to it.

Misuse of confidential informationAs specified in Coco v AN Clark (Engineers) Ltd [1968] FSR 415, to establish an action for breach of confidence, it is necessary to demonstrate that: (a) the information itself had to have the necessary quality of confidence; (b) the information was communicated in circumstances importing an obligation of confidence; and (c) there was an unauthorised use of the information to the detriment of the party communicating it (at [215]). In relation to information gained by employees during their employment, Faccenda Chicken Ltd v Fowler [1987] Ch 117 established that, after the termination of an employment contract which did not include an enforceable restrictive covenant, a former employee could use a third party's information which formed part of his or her own skill, knowledge and experience learned during the course of his employment, provided that it was not a trade secret of his former employer (at [225]).

Arnold J then analysed the evidence to determine which of the designs complained of by Force India were: (a) already in the public domain; (b) derived from Aerolab's employees' own skill and knowledge; or (c) were confidential information which had been misused by Lotus employees. This all makes quite a read for the car enthusiast. In relation to the last category, Arnold J found that these designs were for the front wing endplate and turning vane; for the front wing transition element; the rear wing; the forward bargeboard; chin fences; vortex generator; rearview mirror; front spine; drive shaft; limit cams and shaft clamps; and lower wishbone flexure.

Who was liable for these misuses of confidential information? Aerolab and FondTech accepted (at [338]) that they were liable for any misuse of confidential information found to have been made by their respective employees. Arnold J noted (at [338]) that Aerolab's liability was in contract, whereas FondTech's liability was in equity, also finding that Mr Gascoygne was not liable for the above breaches of confidential information. This was because the method by which Aerolab and FondTech created the designs was not the subject of any agreement with Mr Gascoyne. On the contrary, Arnold J noted that Mr Gascoyne relied on Aerolab and FondTech to use their own professional skill and knowledge to create the designs. As Arnold J had rejected the claim against Mr Gascoygne, it followed that Lotus could not be liable for authorising Mr Gascoygne to act as its agent.

Copyright InfringementForce India claimed that each of its CAD files was a copyright work, that Aerolab and FondTech created CAD files which reproduced substantial parts of its CAD files and that 1 Malaysia UK made electronic copies of the Aerolab/FondTech CAD files in the UK, thereby infringing Force India's UK copyrights. There was no dispute as to subsistence and ownership of copyright in the Force India CAD files. There was some discussion as to whether these were artistic or literary works. In the view of Arnold J (at [370]) they comprised both: he found (at [373]) that the Aerolab/FondTech CAD files did reproduce a substantial part of the corresponding Force India CAD files for the following parts: the vortex generator, rear brake duct lower element and rear view mirror. Accordingly, the copyright claim succeeded to that extent, but not otherwise.

QuantumArnold J observed (at [374]) that it was very difficult to find a clear, accurate and comprehensive statement of the principles applicable to the assessment of damages or equitable compensation for breach of confidence. In his view, the case law was very confused, and none of the existing commentaries deal entirely satisfactorily with it. Accordingly, he began by sketching the contours of the problem, then examine the authorities, then draw some general conclusions and finally address a couple of specific issues which arise in this case.

From such an analysis, Arnold J believed (at [386]) that the cases established the following principles for the assessment of such damages:

1. The overriding principle is that the damages are compensatory.2. The primary basis for the assessment is to consider what sum would have arrived at in negotiations between the parties, had each been making reasonable use of their respective bargaining positions, bearing in mind the information available to the parties and the commercial context at the time that notional negotiation should have taken place.3. The fact that one or both parties would not in practice have agreed to make a deal is irrelevant.4. As a general rule, the assessment is to be made as at the date of the breach5. Where there has been nothing like an actual negotiation between the parties, it is reasonable for the court to look at the eventual outcome and to consider whether or not that is a useful guide to what the parties would have thought at the time of their hypothetical bargain.6. The court can take into account other relevant factors, and in particular delay on the part of the claimant in asserting its rights.

For Arnold J (at [424]), the same approach was to be adopted to the assessment of damages or equitable compensation whether the obligation of confidentiality which has been breached is contractual or equitable. Where the claimant exploited the confidential information by manufacturing and selling products for profit, and his profits had been diminished as a result of the breach, then he could recover his loss of profit. Where the claimant exploited the confidential information by granting licences to others, and his licence revenue had been diminished as a result of the breach, he could recover the lost revenue. Where the claimant would have 'sold' the confidential information but for the breach, he could recover the market value of the information as between a willing seller and a willing buyer. Where the claimant could not prove he has suffered financial loss in any of these ways, he could recover such sum as would be negotiated between a willing licensor and a willing licensee acting reasonably as at the date of the breach for permission to use the confidential information which had been misused in the manner in which the defendant had used it.

Looking at matters in the round, Arnold J considered (at [424]) that a willing licensor and a willing licensee acting reasonably would have negotiated a fee of €25,000. This figure was fair, equitable, effective, proportionate and dissuasive, as required by Article 3 of Council Directive 2004/48 on the enforcement of intellectual property rights. This sum was to be set off (at [463]) against the €846,230 which Force India owed Aerolab under the Development Contract.

The IPKat thinks that this case is a timely reminder of the importance of having sufficient factual evidence to support each limb of a breach of confidence action. As noted above, Force India complained about 71 designs, of which only 11 survived judicial scrutiny.

Merpel, always liking to know what a remedy for infringement might be worth, is grateful to Arnold J for his helpful summary on compensation for breach of confidence.

Earlier this week, in Innoweb BV v Wegener ICT Media BV, The Hague Court of Appeal asked nine questions of the Court of Justice of the European Union (CJEU) about how to interpret the provisions of the EU Database Directive protecting sui generis databases. The IPKat is fortunate to have received the following explanatory note from Stephen Vousden, who has agreed to let the Kats share it with their readers.

"Wegener runs a website called AutoTrack. It is a car advert website the content of which changes daily. On any given day, up to 200,000 second-hand cars may be offered for sale. The sellers are private individuals, car showrooms or garages. Most of the adverts are however also available on other websites; only about 40,000 adverts are exclusive to Wegener's website. To help its online visitors find the right car, Wegener's website is furnished with a search engine.

Innoweb runs a website known as GasPedaal. Visitors to the GasPedaal website also use a search engine to find the car they want. GasPedaal's search engine is a 'dedicated meta search engine'. It is 'dedicated' in so far as it searches only through specific websites. And it is 'meta' in so far as it uses the search engine of the website to be searched.

One of the dedicated websites searched by GasPedaal's search engine is Wegener's AutoTrack website. Thus when a GasPedaal end-user types in a search command, GasPedaal's search engine translates that command into the search functionality appropriate for the dedicated website -- in this case, the AutoTrack website. AutoTrack's search engine then finds any relevant adverts and makse them available to the GasPedaal search engine. On receipt of the first page of relevant adverts (about 15), the GasPedaal search engine sorts and collates them with the other first pages that are sent by the other dedicated websites. The GasPedaal search engine notes any results common to the various dedicated websites and makes only a single result from them (showing the links to the various sources); and it also slims down the information to specific criteria including the model, year, price, and mileage. The GasPedaal search engine then builds a webpage of results, saves it for about 30 minutes on the server, and sends a copy of the results to GasPedaal's end-user. Of the 300 000 adverts taken from the various websites, GasPedaal only makes available to the user a very small amount of AutoTrack's database with every search command, the content of the data being determined by the search terms used by GasPedaal's end-user.

On a daily basis, about 100,000 search commands from GasPedaal pass through the AutoTrack website. Approximately 80% of the various combinations of make and model are searched through at least once, and the details of the searched adverts are made available to the end-user.

Wegener sought an injunction to stop what it claimed was GasPedaal's infringement of its sui generis database rights. While The Hague Court of Appeal assumed that Wegener's collection was a database within the meaning of Article 1(1)(a) of the Dutch Database Act it also assumed that

i. there was no extraction of the whole or a substantial part of the contents of Wegener's sui generis database within the meaning of Article 7(1) of the Directive;

ii. the repeated extraction of insubstantial parts of the content of Wegener's sui generis database did not constitute an infringement for the purposes of Article 7(5) Directive; but that there was

iii. a repeated re-utilisation of insubstantial parts of the contents of Wegener's sui generis database – the cumulative effect of which was that a substantial part of the contents of the database was made available to the various users of GasPedaal's search engine when taken together.

However, The Hague Court of Appeal was unsure how to apply EU law. In particular,

• in circumstances such as these, was there a re-utilisation of the whole or a substantial part of Wegener's database?

• what did Article 7(5) mean when it used the word 'systematic'?

• did the Article 7(5) prohibition not apply if only insubstantial parts of the content of the database were made available to individual users, notwithstanding that the cumulative effect of the repeated re-utilisation of insubstantial parts was that a substantial part of the contents of the database was made available to different users when taken together?

• And what did the CJEU mean in Case C-203/02British Horseracing Board v William Hill when it was interpreting Article 7(5), talking about unauthorised actions, and uttered the phrase in para 89: 'which thus seriously prejudice the investment made by the maker of the database' - was that the case here?

These doubts spurred The Hague Court of Appeal to ask no fewer than nine detailed Questions of the CJEU".

The IPKat has been wondering whether the first of these bullet points is a genuine quest for clarification of the law or a cunningly-disguised attempt to get the CJEU to make a finding of fact.

Merpel merely reflects on the sad reality that all the hard work that went into the drafting of the Database Directive was put in at a time when we knew what the internet was but had no idea what it was capable of. If it had been drafted today, it is inconceivable that its recitals and substantive provisions would contain not a single reference (as is currently the case) to words such as "online", "internet", "search" or "download", and that its only reference to "computer" would to the effect that "database" should not be taken to include a "computer program" -- something that might not have been apparent in 1996 but which, today, is about as helpful as saying that "cheese" should not be taken to include "mouse". Given the tortured reasoning that national courts and the CJEU have had to employ when applying Europe's harmonised law to facts that inconveniently never quite seem to fit it, Merpel hopes that a fit-for-purpose revision exercise will soon be on its way, followed by some clearer, simpler, more user-friendly legislation.

Wednesday, 28 March 2012

The IPKat has been doing some thinking about IP and access to information in Europe. He remembers how, when the Office for Harmonisation in the Internal Market (OHIM) opened its doors to Community trade mark applicants in 1996, much of Europe's IP fraternity was still getting used to the internet and email. OHIM had an online presence, but it was pretty static compared with the excellent website it has today. However, OHIM was in the business of processing applications, oppositions and (eventually) cancellations: it did not see itself as a massive information-provider. As editor of the then-new European Trade Mark Reports, this Kat made two trips to Alicante to plead his case for Board of Appeal and Opposition Division decisions to be made available to him so that he could report them. He recalls being rebuffed at first with the answer: "If we let you have them, we'd have to let everyone else have them too".

Things are now so different. The OHIM website is literally awash with searchable, accessible information concerning its own decisions and a large number of other things. But is all as well as it should be? A young researcher told him that he recently sought some information from OHIM and was rebuffed with the response: "We don't give individual information. We try to make all our information available on our website and cannot respond to any further inquiries". In other words, when formerly it was the policy not to give out information unless there was a clear requirement to do so, it now appeared that the policy was not to give information out because it was already out there somewhere, just waiting to be found. Fortunately this was not the end of the story: the researcher persisted and has now made contact with someone who, it seems, should be able to help him.

Once he had worked out how
to open Windows, everything
else was easy ...

Most readers of this weblog are presumably net-literate. Younger readers will have been taught how to make best use of computer search facilities; older ones will have learned the hard way, through trial and error. Good web design, increasingly powerful search tools and a combination of intuition and experience make it easy for IP practitioners, clients and researchers to pinpoint the data they require. Yet even this Kat gets frustrated in his pursuit of information: on three occasions recently (twice in the public sector, once in the private sector) he has been unable to find data which he knew to be available online and he was unable to summon meaningful assistance from the sites' designated contact points. He wonders if he is alone in speculating that the best way to stop anyone finding an item of information -- particularly if all the obvious search terms are common words or the success of the search depends on the use of diacritical signs -- is to make it available online.

Postscript: OHIM, ever conscious of its commitment to make its website more pleasurable for users of the Community trade mark and design systems, has launched an online survey, which should take no more than two minutes to complete. You can access the survey here and can answer the questions in all five languages in which OHIM operates.

Around the weblogs. IP Watch reports that the Committee of International Trade of the European Parliament voted yesterday not to refer the Anti-Counterfeiting Trade Agreement (ACTA) to the Court of Justice of the European Union for a ruling as to its compatibility with current EU law (for background see earlier Katpost here). Afro-IP hosts this thoughtful piece from Kingsley Egbuonu on whether the US or the UK provides better technical assistance for Africa's IP infrastructure. On the copyright-based 1709 Blog, Eleonora Rosati writes comically about the attempts in Italy to pass an online copyright law (here and here) while Ben Challis, on the same blog, explains that the Spanish equivalent, the Sinde Law, may already be obsolete and Kat/1709 blogger Jeremy posts a reader's anxious inquiry about whether Apps need a special legal regime.

Just kidding ...

If you are planning to do some serious litigation in the Court of Justice of the European Union (CJEU) and have a long flight ahead of you and nothing to read or do, why not dip into the latest draft new rules of procedure for the CJEU. The Kat has taken a peep at it and can confirm that, unlike the new rules for its little brother, the General Court, this draft does not have any content that appears to be IP-specific. Presumably that will change in the event that the CJEU finds itself hearing patent cases, in addition to the rich and varied diet of trade mark, copyright, design right and database right cases it has been dealing with of late.

Truth is stranger than fiction. Last week the IPKat announced the publication of a novel, Patently in Love, by Rhoda Baxter (see earlier katposts here and here), for which a reviewer has now been found. No sooner than he had done so did he receive this email from Ivan Cotter:

" ... Would you believe that, as a retired patent attorney who has spent over 40 years writing non-fiction (though not all examiners would agree with the “non”!), I published my first novel (The Schmetterling Effect) on Amazon on 15 March 2012 (the same day that Rhoda published her book) and that the hero is a male English patent attorney who falls head over heels for an Irish trade mark attorney who he meets in her office in Dublin? Having said that, the love story is incidental to the main plot, so I do not see Rhoda’s book and mine being in competition. My main plot line is that the consumption by a Dr Schmetterling (which is German for "butterfly") of a considerable amount of Irish stout in an Irish bar in Berlin in 2005 leads, a few years in the future from now, to reformation of the European Union (EU) in an ugly form, nuclear war in the middle east, economic collapse in Ireland, the discovery of huge oil and gas reserves under Ireland concealed by the EU, a vicious murder, retribution for the murder, and a geopolitical effect of surprising magnitude! (Also, for IP-type readers, some digital signal processing and mechanical engineering is thrown in!)

Anyway, I hope that Rhoda and I are both successful in our ventures from the technical into the artistic".

Merpel asks: "is this what
they mean by a partners'
meeting ...?"

Still on the subject of Rhoda's book, the IPKat has received another saucy paragraph of romantic prose rich in patent allusions. It emanates from Brian Whitehead (Kempner & Partners LLP) and runs like this:

“The RANDY LADDIE made the DISCOVERY that a PRELIMINARY EXAMINATION in the KITCHIN satisfied a LONG-FELT WANT. He was SKILLED IN THE ART, and went well beyond what was OBVIOUS TO TRY. After a suitable GRACE PERIOD, he finally obtained the INJUNCTIVE RELIEF he was seeking”.

Thank you, Brian. Normally this weblog wouldn't welcome the receipt of a solicitor's letter but, if all your writing is like this, the Kats might make an exception ...

To make sure the bloggers find you in a dark,
crowded room, please make sure you wear
your Viking helmet on arrival

Meet the Bloggers @ INTA 2012. The date is fixed for Monday 7 May, between 8pm and 10pm. The venue is the Hill Country Barbecue [note the correct spelling!] Market, 410 7th Street NW, Washington DC. The hosts are Marty Schwimmer (Trademark Blog), John L. Welch (TTABlog), Ron Coleman (Likelihood of Confusion) and Erik Pelton (ErikPelton.com). The event is free, all are welcome and, well, that's about it. Great chance to meet bloggers from all five, six seven continents and to discover how much older some of them are than their photos suggest. Brilliant invite/RSVP here.

This particular guest Kat was chuckling just yesterday over these elegantly understated words written by Sir Hugh Laddie while a Judge in the Patents Court, and quoted in the House of Lords decision in Conor v Angiotech:

"A company which has spent millions of dollars on research and has produced a valuable new drug will be understandably irritated when, say, a court declares the patent invalid for obviousness, thereby opening up the market to competitors."

Applying this dictum mutandis mutatis to drug formulations, the latest patentee to be “understandably irritated” is Astrazeneca. The ever-faithful BAILII has delivered into the paws of the IPKat Mr Justice Arnold’s decision of 22 March revoking for obviousness Astrazeneca’s patent on a sustained release formulation of the anti-psychotic drug quetiapine (marketed by Astrazeneca under the trade mark Seroquel).

The facts and the outcome have echoes of Actavis v Novartis (and indeed one of the expert witnesses was the same). In that case, it was a patent concerning a sustained release formulation of fluvastatin that was held to be obvious. However, Merpel reminds us that in the fluvastatin case the sustained release was claimed in rather broad terms:

A sustained release pharmaceutical composition comprising a water soluble salt of fluvastatin as active ingredient and being selected from the group consisting of matrix formulations, diffusion-controlled membrane coated formulations and combinations thereof, wherein the sustained release formulation releases the active ingredient over more than 3 hours.

whereas in the quetiapine case only a single type of sustained release formulation was at issue, claim 1 being in the following terms:

A sustained release formulation comprising a gelling agent and [quetiapine] or a pharmaceutically acceptable salt thereof, together with one or more pharmaceutically acceptable excipients.

Lions in the path?

The IPKat considers that both cases really come down to “expectation of success”, and this is always a difficult issue to decide. Arnold J addresses at the end of his judgement the tricky situation that, while he has considered the patent invalid, a Dutch court has recently considered the same patent to be valid. Gratifyingly for the IPKat, who is always happy to see his undomesticated cousins appearing in Patent judgements, this was expressed using the “lions in the path”/”paper tiger” language developed in Pozzoli v BDMO. In this agreeably feline language, the patentee argues that there were reasons why the person skilled in the art would not have expectation of success, the “Lions in the path”, and the applicant for revocation argues that these are illusory – mere “Paper tigers”.

Or paper tiger?

In the present case, the Dutch court apparently accepted that there were lions in the path including: high first pass metabolism that was a counter-indication for the development of a sustained release formulation; high serum protein binding; and pH-dependent solubility. The last two were not put forward in front of Arnold J, while the first was considered by him to be a paper tiger.

The IPKat wonders whether this very subjective determination is likely to become sufficiently predicatable that different courts in different countries with different procedures will come to similar conclusions. Or will a Dutch lion always morph into a British tiger? Merpel wonders whether national divisions of a unitary court will be any more homogeneous in their results.

The IPKat decides to end speculation among
readers as to what makes him tick ...

In his editorial capacity, this member of the IPKat team spends much of his life deleting unnecessary and irrelevant dates from articles and case notes which it falls to him to edit. However, there are instances when not only dates but specific points of time become not merely relevant but acutely interesting. This is true of Case C 190/10Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (Génesis) v Boys Toys Sa, Administración Del Estado, a ruling of the Court of Justice of the European Union (First Chamber) on 21 March, a reference for a preliminary ruling which will fascinate trade mark applicants, their professional advisers and to all true clock-watchers.

On the morning of 12 December 2003, at precisely 11:52 hours and 12:13 hours respectively, Génesis filed by electronic means two Community trade mark (CTM) applications. The first was for the word mark RIZO (Classes 16, 28, 35 and 36) of the Nice Agreement. The second was for the word mark RIZO, EL ERIZO for almost the same classes. On the very same date, but at 17:45 hours, Pool Angel Tomás SL applied to the Oficina Española de Patentes y Marcas (the Spanish Patent and Trade Mark Office, OEPM) for registration of the word mark RIZO’S for goods in Class 28 [Merpel says, I think I know what's coming ...]. Génesis opposed the Spanish application, taking the view that its Community word marks RIZO and RIZO, EL ERIZO had priority over that trade mark since they were filed earlier.

After the OEPM rejected the opposition, Génesis appealed and sought a declaration that its Community trade marks had priority. In June 2005 the OEPM dismissed that appeal and reaffirmed that, under Article 27 of the Community Trade Mark Regulation, it was bound to hold that the filing of the application for the CTMs at issue in the main proceedings had been carried out on 7 January 2004, the date on which the documentation was actually submitted, and not the date of the electronic application; that date was later than the date of filing of the application for the Spanish trade mark RIZO’S.

Génesis appealed to the Second Section of the Chamber for Contentious Administrative Proceedings of the Tribunal Superior de Justicia de Madrid which confirmed, in February 2008, that the decision to allow registration of the Spanish RIZO’S trade mark was well-founded. That court also considered that the date of filing of the application for the CTMs was the date on which the documentation was actually submitted, and not the electronic filing date of 12 December 2003.

Génesis appealed further to the Tribunal Supremo, maintaining that the correct interpretation of Articles 26 and 27 of the Community Trade Mark Regulation was that the date of filing of its applications was the date on which those applications were transmitted to and received by OHIM. Accordingly, 12 December 2003 should be accepted as the date of filing. Sensing that, where Alicante and Madrid were in conflict, a neutral forum might come in handy, the Tribunal Supremo decided to stay proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘May Article 27 of [Regulation No 40/94 as amended, repealed and even re-enacted, but never forgotten] be interpreted in such a way as to enable account to be taken not only of the day but also of the hour and minute of filing of an application for registration of a Community trade mark with OHIM (provided that such information has been recorded) for the purposes of establishing temporal priority over a national trade mark application filed on the same day, where the national legislation governing the registration of national trade marks considers the time of filing to be relevant?’

The Court of Justice of the European Union (First Chamber) held last week that

"Article 27 ... must be interpreted as precluding account being taken not only of the day but also of the hour and minute of filing of an application for a Community trade mark with ... OHIM ... for the purposes of establishing that trade mark’s priority over a national trade mark filed on the same day, where, according to the national legislation governing the registration of national trade marks, the hour and minute of filing are relevant in that regard".

The Court actually had plenty to say. First, it confirmed that the reference was admissible since it was not apparent, or at least "not quite obvious", that the interpretation of European Union law requested here was unrelated to the actual facts of the main action or to its purpose. Nor did it appear to concern a purely hypothetical problem. The reference was therefore admissible.

As for the substance of the reference:

Since there were no provisions relating to the procedure for filing or to establishing the date of filing of applications for national trade marks, Member States were free to pick their own provisions on the subject which might therefore differ from one Member State to another.

The CTM regime has its own rules relating to the procedure for filing an application which makes no reference to the provisions of national law in that regard.

An obligation to state the date or the day does not imply, according to the ordinary meaning, that it is necessary to state the hour and, a fortiori, the minute. Therefore, in the absence of any express reference to the hour and minute of filing of a CTM application, it is apparent that this information was not considered necessary for the purposes of establishing the time of filing of a Community trade mark application.

Since an application for a CTM may be filed (i) with OHIM, (ii) with the central industrial property office of a Member State or (iii) with the Benelux Trade Mark Office, if it were necessary to take the hour and minute of filing of an application for a CTM into account, that obligation would have to stem explicitly from provisions of general application.

Where a CTM is invoked for the purposes of opposing the registration of a national trade mark, if the date of filing of the application for that CTM were to be established by taking account of provisions of national law, that would in effect undermine the uniform nature of the protection of a CTM because the Member States remain free to determine the procedure for filing applications for national trade marks, with the result that the extent of the protection given to that CTM might differ from one Member State to another [The IPKat thought this was a most appealing point].

EU law actually precludes the hour and minute of the filing of an application for a CTM from being taken into account under national law for the purposes of establishing that CTM's priority over a national trade mark filed on the same day, where the national legislation governing the registration of national trade marks considers the hour and minute of filing to be relevant in that regard.

The IPKat thinks this must be right. He's just a little sad that, when the parties are arguing about hours, minutes and seconds, this dispute relates to a filing which took place in December 2003 and, despite the paucity of relevant existing law on the subject, it has only now got as far as a ruling on a preliminary issue.

Merpel's speculating about some exciting "might-have-been" references regarding priority where, given the EU's span of time zones as between East and West, a national application filed in one country might bear an later time stamp than an application filed after it in another time zone but being accorded an earlier time stamp.

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